T 0172/15 - Dulce de leche

Key points

• Today just an interesting invention. Claim 1 is for a fat-based composition comprising 11 specific flavor components, including 2-acetyl-3-hydroxyfuran.
• The technical effect of the claim is to provide a dulche de leche flavor.
• The Board: " It is indeed surprising that, in order to obtain the dulce de leche flavour in a fat-based composition, the skilled person needs to add a compound that is not present in the water-based dulce de leche composition itself, and needs to do so in combination with the other ten components recited in claim 1."

EPO T 0172/15 - link

III. The opposition division maintained the patent on the basis of the third auxiliary request, claim 1 of which read as follows:

"1. A fat-based confection comprising a fat continuous phase in which material components are dispersed, and the following flavor components: 2-hydroxy-3-methyl-2-cyclopenten-1-one, 2-acetyl furan, 2-acetyl-3-hydroxyfuran, methyl furanoate, 2,5-dimethyl-4-hydroxy-3-(2H) furanone, 3-hydroxy-2-methyl-pyran-4-one, 2-furfural, 2-(5H)furanone, 2-furfuryl alcohol, dihydro hydroxy maltol and 5-hydroxymethyl furfural."

4.3 Problem and solution

4.3.1 According to the respondent, the technical problem underlying the patent in suit in view of D38 is the provision of a fat-based confection having a dulce de leche flavour (see page 8 of the reply to the statement setting out the grounds of appeal, point 6.35).

4.3.2 This problem is solved by the fat-based confection of claim 1 which, in addition to the ten flavour compounds present in D38, contains 2-acetyl-3-hydroxyfuran.

4.3.3 As evidence that the problem has indeed been solved, the respondent relied on the information provided in the patent itself. [...]

4.3.4 It follows from these results that the eleven flavour compounds in this combination yield a dulce de leche flavour when present in a fat-based matrix.

4.3.5 The appellant disputed that the problem identified above was credibly solved. It essentially argued that it had not been demonstrated that the addition of 2-acetyl-3-hydroxyfuran in any concentration would change the flavour of the chocolate analysed in D38 at all. It further argued that there was no experimental evidence that the use of the claimed flavour ingredients in any concentration or in isolation from the dulce de leche-like preparation manufactured according to the procedure in example 1 would provide the desired dulce de leche flavour. It relied on experimental evidence D42 and D43, filed during the opposition proceedings, and on the newly filed D46 to support its arguments.

4.3.6 The board is not persuaded. First of all, it is noted that there is no experimental evidence on file showing that an embodiment according to the invention does not have the required dulce de leche flavour. The evidence relied on by the appellant may be summarised as follows:

[...]

In this context it is noted that, in the field of the invention, it is generally known that the perception of a certain flavour is dependent not only on the individual compound but on the combination and amount of all the compounds present in the composition. Results obtained with four flavour compounds as in D42/D43 cannot provide usable information about the flavour of the claimed combination of eleven flavour compounds.

4.3.7 To summarise, the fat-based composition of example 1 of the patent containing the eleven flavour compounds recited in claim 1 has a dulce de leche flavour profile. In the absence of experimental evidence to the contrary, the board is satisfied that the above problem of providing a fat-based confection having a dulce de leche flavour has indeed been credibly solved over the whole scope of claim 1. Therefore this problem constitutes the objective technical problem.

4.4 Obviousness

4.4.1 It remains to be decided whether, in view of the available prior art, it would have been obvious for the skilled person to solve the technical problem as defined above by the means claimed.

4.4.2 In this context the appellant relied on D40, which discloses that 2-acetyl-3-hydroxyfuran has "a caramel-like, somewhat fruity flavor very similar to that of maltol" (see column 1, lines 34 to 36). In its view, the skilled person would be motivated to additionally include 2-acetyl-3-hydroxyfuran in the Cadbury Dairy Milk Chocolate of D38 in order to provide an alternative composition.

4.4.3 The board, however, disagrees. As pointed out above, the objective technical problem is not to provide some kind of alternative to the composition of D38 but to provide a fat-based confection having a dulce de leche flavour. The skilled person would not have been motivated at all by D40 to modify the Cadbury Dairy Milk Chocolate of D38 to provide a composition having a dulce de leche flavour. D40 does not contain any teaching regarding dulce de leche flavour that could provide a hint at such use. Moreover, as pointed out by the respondent, 2-acetyl-3-hydroxyfuran is not present at all in the traditional water-based dulce de leche composition (see table on page 9 of the reply to the grounds of appeal).

4.4.4 It is indeed surprising that, in order to obtain the dulce de leche flavour in a fat-based composition, the skilled person needs to add a compound that is not present in the water-based dulce de leche composition itself, and needs to do so in combination with the other ten components recited in claim 1.

4.4.5 For these reasons, the subject-matter of claim 1 and, by the same token, of dependent claims 2 to 6 involves an inventive step.